Wayne M. Barsky

Barsky is national co-chair of Gibson Dunn’s 125-lawyer intellectual property practice group, where he focuses on high-stakes, high-profile patent litigation for clients in the biotechnology, pharmaceutical and medical device industries.

In late February, he obtained a complete defense win for clients Merck KGaA’s biopharmaceutical unit EMD Serono Inc. and Pfizer Inc. against Biogen Idec Inc.’s $5.4 billion damages claim for infringement of the plaintiff’s patent for a multiple sclerosis treatment.

At issue was Serono’s drug Rebif and its relationship to Biogen’s own drug Avonex.

After eight years of litigation and a five-week trial, a federal jury in New Jersey took a day and a half to find unanimously that Barsky’s Gibson Dunn team had met its burden of proving that Biogen’s patent is invalid because it was anticipated by prior art. In re: Biogen ‘755 Patent Litigation, 10-CV02734 (D. N.J., filed May 28, 2010).

Biogen has subsequently petitioned for a new trial; a trip to the U.S. Court of Appeals for the Federal Circuit is all but certain. The $5.4 billion in damages would have more than doubled the largest sum ever awarded in a patent infringement suit.

To reach the jury’s favorable decision, Barsky and his team had to reach back into the history of recombinant DNA technology dating from the late 1970s and the early 1980s when the patent was obtained.

Biogen brought on as a percipient witness one of its founders, Nobel Prize winner Phillip A. Sharp, who won the 1993 award in physiology or medicine for gene splitting and RNA splicing. Barsky countered with biomedical pioneer Jan Vilcek and cellular biologist Harvey F. Lodish.

Barsky declined to be quoted on the case while it remains in litigation, but his approach to all such thorny scientific issues is informed by his ability to boil down the complex technology to understandable and digestible terms that lay jurors can grasp.

“I’ve been doing this for more than 30 years without a science or engineering background,” he said. “My lack of a Ph.D. means I have to overcome myself the same obstacles that jurors face. You lean heavily on on-the-job training with the truly exceptional world experts among our clients and among my Gibson Dunn clients.”

Even after all these years, Barsky remains enthusiastic about his job.

“I enjoy immensely the life sciences work,” he said. “At times it is mind-bending, and it is always interesting.”

— John Roemer